Although design patents represent just over 11% of annual patent grants, more than 25,000 design patents are approved by the U.S. Patent Office each year. This number represents a significant increase in the popularity of design patents in the past several decades. In 1963, fewer than 3,000 design patents were granted, representing approximately 6% of all patent grants, and in 1990, the 8,000 design patent grants represented 8% of all patent grants.

After large jury verdicts in California design patent infringement cases in 2017, as well as an easing of the design patent infringement standard in 2008, we are likely to see an increase in the number of design patent applications for the foreseeable future.

Design Patent Infringement Statute

Design patent infringement is governed by 35 USC § 271. This statute defines infringement as making, using, offering to sell, or selling a patented invention without authority. This definition extends to individuals actively inducing infringement, as well as selling, offering to sell, or importing a material part of an invention protected by a design patent.

Pursuant to 35 USC § 173, design patents whose applications were filed on or after May 13, 2015 will maintain this exclusive monopoly for 15 years from the date the patent was granted. Design patents whose applications were filed prior to this date will receive protection for 14 years from the date the patent was granted.

Design patent infringement actions are also governed by 35 USC § 289, which allows patent holders to recover total profits earned by the infringing party in certain situations. Section 289 exclusively pertains to design patents and is not applicable to utility patents.

Design Patent Infringement Test

There are a number of influential court decisions that lay out the standards for design patent infringement.

In 1872, the Supreme Court decided Gorham v. White, which established the “ordinary observer” test for design patent infringement: If an ordinary observer believes that the resemblance between two items is similar enough to purchase one believing that it is the other, the second design is infringing. The alternative — requiring an expert to be tricked — would be a significantly more difficult burden for a plaintiff to meet.

The second case, Litton Systems, Inc. v. Whirlpool Corporation, was decided by the Federal Circuit in 1984. This case refined the design patent infringement test as a two-pronged test. The first prong was the “ordinary observer” test, but the second prong required examination of the “point of novelty” that distinguished the patented item from prior art. This “point of novelty” test required that the similarity of designs must be attributed to the new or novel elements of the patented object. This test was in effect for twenty-four years, until 2008 when the Federal Circuit modified this test in Egyptian Goddess v. Swisa, Inc.

The Egyptian Goddess case marked a return to the single “ordinary observer test” to determine whether a design patent has been infringed, noting that infringement will not be found unless the infringing item embodies the patented design or a colorable imitation. As part of the ordinary observer test, the comparison of the designs must be conducted as part of the ordinary observer test, not as part of a separate test focusing on novelty.

As a result of Egyptian Goddess, the test for design patent infringement relies on an analysis of how well the “ordinary observer” can distinguish the infringing product from the original product when considering the overall appearance and effect of the objects in question. Prior art can play into this analysis, but it is no longer a pivotal point in determining whether design patent infringement occurred.

Design Patent Infringement Standard

The ordinary observer standard is currently the only test to determine whether design patent infringement has occurred. Courts will consider who the ordinary observer for a particular product is similar to the analysis of the typical consumer in trademark infringement cases. Products sold at grocery stores or in retail stores will be considered under the guise of the average shopper, but items sold only to professionals in a particular industry may be considered with a more discerning eye.

Although courts may look at new or novel elements, the analysis should consider the overall appearance of the products in question. However, there are limitations to what features should be considered when applying the ordinary observer standard.

A design patent only covers the ornamental features of a product, and it only protects specific elements listed in the patent claims. Elements not listed in the claims or that are specifically disclaimed in the patent application are not included in the analysis. Because design patent infringement cases often rely on claims in the patent application, it is important to draft the original application with potential future litigation in mind.

Additionally, design patents only extend to the ornamental features of a product – functional elements can be protected by utility patents, but not design patents. Once the functional elements are excluded, the court must look at the deception arising from the overall design, not ornamental features in isolation, to determine whether design patent infringement occurred.

The burden of proof falls on the plaintiff to show that infringement occurred. The defendant in a design patent infringement case may also raise claims that the patent is invalid, by arguing that the ornamentation was not novel or original.

Design Patent Infringement Damages

Design patent holders have two options for recovering damages due to infringement. Like utility patent holders, design patent owners may seek recovery of either lost profits or reasonable

royalties. Alternatively, design patent holders have the option to seek relief under 35 USC § 289. This section gives design patent holders the option of recovering the total profits earned by the infringing party if the infringer either:

Applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or

Sells or exposes for sale any article of manufacture that a design has been applied to.

This type of damage is not available to utility patent holders.

Article of Manufacture Analysis

In recent years, there have been high-profile discussions to determine the scope of Section 289, specifically concerning the “article of manufacturer,” stemming from the 2016 Apple, Inc. v. Samsung Electronics Co. Supreme Court decision. In its decision, the Supreme Court laid out a two-part test for determining damages under this statute:

First, the court must identify the article of manufacture to which the infringed design has been applied. The article of manufacture consists of both the final end product and a component of this product.

Second, it must calculate the total profit earned by the infringer based on that article of manufacture.

Although the Supreme Court did not create a test to identify articles of manufacture, in 2018, the Northern District of California listed four elements that must be analyzed:

The scope of design claimed in the plaintiff’s patent, including the drawings and written description

The relative prominence of the design within a patent as a whole

Whether the design is conceptually distant from the product as a whole, and

The physical relationship between the patented design and the rest of the product – is the design contained to a component that can be physically separated from the rest of the product, is it manufactured separately, or can it be sold separately?

In Apple v. Samsung, Apple was awarded $538 million, which included $399 million for damages related to design patent infringement. In Columbia Sportswear, the jury awarded more than $3 million to the plaintiff.

Lost Profits and Reasonable Royalties

Being able to recover the defendant’s total profits is a significant advantage in a design patent infringement case because the alternative – lost profits or reasonable royalties – requires analysis of hypothetical situations and can result in lower damage awards. However, these awards are an available alternative to the design patent holder. To recover lost profits, the plaintiff must either manufacture or sell products protected by its patent, and it must show:

The demand for the product,

The lack of alternatives available to the public,

Plaintiff’s ability to meet public demand, and

The profit the plaintiff would have made but for the defendant’s infringing activities.

The value of the product itself, including how popular it is and what profits plaintiffs receive from it

Profits the defendants receive due to their infringing activity, as well as how much the defendant used the infringing product.

Although lost profits and reasonable royalty calculations are more typically found in utility patent cases, they remain an available remedy in design patent infringement matters.

Additional Available Damages

In design patent infringement cases, the prevailing party may also seek attorney’s fees in “exceptional cases,” such as when one party acted with bad faith or makes assertions different than what was claimed in previous filings or proceedings. Separately, the prevailing party may also seek costs associated with design patent infringement litigation.

Equitable Remedies for Design Patent Infringement

In addition to monetary damages, design patent holders may seek equitable remedies, such as injunctions, to temporarily or permanently halt infringing activity. In order to obtain a preliminary injunction at the outset of litigation, a design patent holder must show:

It is likely to succeed on the merits of the case

It is likely to suffer irreparable harm in the absence of this relief

The balance of hardships is in its favor

An injunction is in the public interest

Additionally, if the patent covers a multi-component product, the plaintiff must also show a sufficiently strong causal connection relating the alleged harm to the infringement. To receive a permanent injunction on infringing activities, the plaintiff must show:

It has suffered irreparable harm

Monetary damages are inadequate to compensate for this injury

The balance of hardships is in favor of the injunction, and

The injunction is in the public interest.

Design Patent Cease and Desist Letter

If you believe someone is infringing your design patent rights, a first step is often to send a cease and desist letter to the infringing party. This letter should contain the following information:

An explanation of your intellectual property rights in the design patent, including its registration information;

A description of what the infringing activity constitutes, which may include written information, photographs of the product, and screenshots demonstrating the object being sold online;

A demand that the other party immediately cease and desist engaging in infringing activity;

A request for proof of compliance within 10 days;

An explanation that, if proof of compliance is not received, you are prepared to commence design patent infringement litigation.

It is also common for design patent infringement letters to request monetary compensation from the other party. This may come in the form of a licensing agreement, which would allow the other party to continue utilizing your design patent in the future. You may also request a payment from the other party as a settlement for any legal claims you may have for past infringing activities.

The goal of a cease and desist letter is to resolve design patent infringement matters in a timely and cost-efficient manner outside of court, which can be beneficial to both parties. Proceeding with this step does not prohibit moving forward to litigation in the future, but it does give you the opportunity to resolve infringement matters early and in an amicable way.

Design Patent Infringement Examples

Design patents protect items in a wide variety of industries. Design patents are often used to protect clothing, accessories, and fashion elements in the United States, which has significantly fewer protections for fashion than in Europe. Because of this, design patents can be useful for avoiding knockoffs and protecting independent designers.

German shoemaker Puma battled against retailer Forever 21, which it claimed was selling a shoe that is a near copy to one protected by a design patent. This case settled in 2017 for an undisclosed amount. Nike has also proceeded with design patent infringement claims against Wal-Mart, alleging that shoes being sold violated its patent rights. Even Paris Hilton dealt with a design patent lawsuit over the design of the soles of her shoes. Ralph Lauren has faced design patent infringement charges over a handbag containing internal LED lights and cell phone battery charging equipment.

Mandour & Associates – Design Patent Infringement Lawyers

Our practice is devoted to helping entrepreneurs, inventors and business people protect their intellectual property. We have many years of experience and can assist you with your design patent issues.

Disclaimer: The information on this website is for general information purposes only. Nothing on this site should be taken as legal advice for any individual case or situation. This information is not intended to create, and receipt or viewing does not constitute, an attorney-client relationship.